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8293
To give effect to the Agreement of Trade-Related Aspects of the Intellectual Property Rights
(TRIPS) that was ratified by the Philippine Senate on December 14, 1994
Non-Retroactivity
No. In the case of Mighty Corporation v. E & J Gallo Winery, G.R. No. 154342, July 14,
20014, the Supreme Court Said
It is fundamental principle that the validity and obligatory force of a law proceed
from the fact that it has first been promulgated. A law that is not yet effective cannot
be considered as conclusively known by the populace. To make a law binding even
before it takes effect may lead to the arbitrary exercise of the legislative power. Nova
constitutio futuris formam imponere debet non praeteritis. A new state of the law
ought to affect the future, not the past. Any doubt must generally be resolved
against the retroactive operation of laws, whether these are original enactments,
amendments or repeals. There are only a few instances when laws may be given
retroactive effect, none of which is present in the case.
The IP Code, repealing the Trademark Law, was approved on June 6, 1997. Section
241 thereof expressly decreed that it was to take effect only on January 1, 1998,
without any provision for retroactive application. Thus, the Makati RTC and the CA
should have limited the consideration of the present case within the parameters of
the Trademark Law and the Paris Convention, the laws in force at the time of the
filing of the complaint.
Section 2 of the IP Code
Provides for the state policies on intellectual and industrial property system
Trademark
Any visible sign capable of distinguishing goods (trademark) and services (service
mark) of an enterprise which shall include stamped or marked container of goods
Trade name means the name or designation identifying or distinguishing an
enterprise
Copyright
Confined to literary and artistic works which are original intellectual creations in the
literary and artistic domain protected from the moment of their creation
Pearl and Dean Case
o Copyright extends only to the description or expression of the object and not
to the object itself
o Copyright is purely a statutory right, it can cover only the works falling within
the statutory enumeration or description
o Only expression of the idea is protected, not the idea itself
Patentable inventions
Refer to any technical solution of a problem in any field of human activity which is
o New
o Involves inventive step
o Industrially applicable
Case: Pearl and Dean vs Shoemart Inc.
Shoemart’s Defense
Rulings:
Since the light boxes cannot by any stretch of the imagination be considered as either
prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be
properly classified as a copyrightable class “O” work, we have to agree with SMI
when it posited that what was copyrighted were the technical drawings only and not
the light boxes themselves.
Supreme Court
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another.
Other Jurisprudence
Baker vs. Selden (101 U.S. 841 [1879]) – The court held that exclusivity to the actual
forms is not extended by a copyright
Muller vs. Triborough Bridge Authority (43 F. Supp. 298 [S.D.N.Y. [1942]) –
Copyright extends only to the description or expression of the object not to the object
itself. It does not prevent one from using the drawings to construct the object
portrayed in the drawing.
In Creser Precision Systems Inc vs. Court of Appeals, the court held that there can be no
infringement of patent until a patent has been issued, since whatever right one has to the
invention covered by the patent arises alone from the grant of patent. A patent gives the
inventor the right to exclude others. As a patentee he has the exclusive right of making,
selling or using the invention. To be able to effectively and legally preclude others from
copying and profiting from the invention, a patent is a PRIMORDIAL REQUIREMENT. NO
PATENT NO PROTECTION
It is only after an exhaustive examination by the patent office that a patent is issued. There
is no such scrutiny in the case of copyrights nor any notice published before its grant to the
effect that a person is claiming the creation of a work. Therefore, not having gone through
the arduous examination for patents, the petitioner cannot exclude others from the
manufacture, sale or commercial use of the light boxes on the sole basis of its copyright
certificate over the technical drawings.
What P&D seeks is exclusivity without any opportunity for the patent office (IPO) to
scrutinize the lightbox’s eligibility as a patentable invention.
Illustration. Certain Mixtures of medicines are found to be of great value in the healing art
If the discovere writes and publishes a book on the subject, he gains no exclusive right to
the manufacture and sale of the medicine; HE GIVES THAT TO THE PUBLIC.
If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a
new art. Copyrighting of the book only secures him the right of printing and publishing of
the book. Since it is not patented, it is open and free to the use of the public
P&D secured a certificate for the mark “Poster Ads” but one where the goods specified are
“Stationeries, such as letterheads, envelopes, calling cards and newsletters.” In Faberge,
Inc. vs IAC, invoking Section 20 of the Trademark Law, the certificate of registration issued
by the Director of Patents can only confer the exclusive right to use only to those goods
specified in the certificate which in this case does not include “lightbox.” The failure of P&D
to secure a trademark registration for specific use on the light boxes meant that there could
not have been any trademark infringement since registration is an essential element
thereof.
In this case, there was no evidence that that P&D’s use of poster ads was distinctive or well
known. In the mind of the public, the goods and services carrying out the trademark poster
ads could not be distinguished from the goods and services of other entitites. The doctrine
of SECONDARY Meaning cannot be applied since the term poster ads is generic and
incapable of being used as a trademark. Secondary meaning means that a word or phrase
originally incapable of exclusive appropriation with reference to an article in the market
might nevertheless have been used for so long and exclusively by one producer in the trade
that the public now associates the word or phrase to mean that the article was his property